Trademarked keyword sales may soon be restricted in Europe

An advocate general to the European Court of Justice has recommended that …

Google has had some luck in the courts when it comes to selling ads with trademarked keywords, but European companies buying those keywords may soon face some hurdles. An advocate general to the European Court of Justice has recommended that restrictions be placed on the use of keywords owned by other companies, though Google itself will likely remain free of liability.

Advocate general Niilo Jääskinen issued his opinion as part of a legal case between flower delivery service Interflora and Marks & Spencer, which runs a competing flower operation. Interflora had sued Marks & Spencer after Google searches for Interflora began turning up ads for Marks & Spencer, which Interflora argues is confusing to consumers and ultimately leads to lost business.

According to Jääskinen, the owner of a trademarked term should be able to prohibit other companies from using the trademarked term when the ad in question "does not enable an average Internet user, or enables the said user only with difficulty, to ascertain whether the goods or services referred to in the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or from a third party."

Put more simply, if the ad makes it difficult for a regular person to figure out who's selling the advertised service, it should be prohibited.

An advocate general's opinion is not the final word, so the court is still left to make its final decision (which is expected to come within the next six months). If the court does adopt Jääskinen's recommendation, however, companies will have to be more cautious about whose trademarks they're using in their own ads, and how they are using those trademarks. If I am an Ars Technica competitor, for example, I might be able to say I'm an alternative to Ars Technica in my AdWords, but I probably wouldn't be able to imply that I am Ars Technica.

So far, however, courts in both Europe and the US have avoided holding Google itself liable for AdWord trademark abuse. Last year, the European Court of Justice ruled that the sale of trademarked keywords should be left open to third parties. That ruling came in response to a lawsuit filed by Louis Vuitton arguing that Google didn't have the right to sell Louis Vuitton keywords to others. Just a month later, a US district judge issued a similar ruling, finding that Google was not infringing on Rosetta Stone's trademark by selling its keywords to third parties.

The courts do seem to be solidly on Google's side, but Google does have policies to fight the advertisement of counterfeit goods on AdWords. (Google makes an effort to bar companies whose websites sell obvious copies or knock-offs of other products, which is a separate policy from its normal trademark rules.) In fact, the company recently added several more measures in order to keep counterfeits out, like working closer with brand owners to identify infringers. Google also says it will reduce its average response time to 24 hours for counterfeit complaints, and has rolled out a new page for reporting counterfeits.

Google didn't comment directly on the advocate general's opinion, but did say that the company thinks users are better serviced by seeing ads "for a wide variety of different contexts" that are informative and relevant to their searches. “We also believe that consumers are smart and are not confused when they see a variety of ads displayed in response to their search queries," Google told the New York Times.

29 Reader Comments

What I find odd, is that AdWords is completely a part or construct of Google's search engine process. They created it, it's their business environment. How then, does the EU find the basis to exert regulatory controls over an internal business' process? If Google decides tomorrow, they're getting rid of AdWords, or change how that logic works, won't that simply make any legal requirements irrelevant?

The entire business of selling trademarked keywords is shady. It is transparently trading on someone else's mark - that was created, developed and maintained by someone else. Even if you aren't misrepresenting yourself (which you patently are) you are still paying to use someone else's mark to gain recognition. If I search for "AMD" and get a link to "Intel.com" as the first ad result that's abuse. Is it actionable? I don't know but unquestionable Intel is preying upon AMD's brand recognition. It's not that Intel is trading under the brand, it's that they are paying to be associated with it - and not to AMD. (In this example).

What's baffling is Google's complicity. In a situation where a company must outbid its competitors for keyword results, the only winner is Google. They facilitate the trademark abuse, and they should be held responsible for that.

Interflora had sued Marks & Spencer after Google searches for Interflora began turning up ads for Marks & Spencer, which Interflora argues is confusing to consumers and ultimately leads to lost business.

is different than this:

Quote:

Put more simply, if the ad makes it difficult for a regular person to figure out who's selling the advertised service, it should be prohibited.

unless a "regular person" is defined as stupid.

You search for Interflora, and an ad for Marks & Spencer's flower service shows up. M&S are not hiding the fact of who they are, nor are they trying to infer that they are Interflora.

What I find odd, is that AdWords is completely a part or construct of Google's search engine process. They created it, it's their business environment. How then, does the EU find the basis to exert regulatory controls over an internal business' process? If Google decides tomorrow, they're getting rid of AdWords, or change how that logic works, won't that simply make any legal requirements irrelevant?

How is Adword's "completely a part of Google's search engine process." It's entirely external to it. Google provides a list of words to advertisers, who bid against each other to buy the billboard space under the keyword. It's not like they're questioning their use of Fibre Channel instead of STP.

What I find odd, is that AdWords is completely a part or construct of Google's search engine process. They created it, it's their business environment. How then, does the EU find the basis to exert regulatory controls over an internal business' process? If Google decides tomorrow, they're getting rid of AdWords, or change how that logic works, won't that simply make any legal requirements irrelevant?

I don't really understand your point. The argument the solicitor is making is that the practice (or at least parts of it) should be illegal. So why would "internal business" change anything? If it's an internal business practice to break the law, then government regulators/police have authority to stop it...

The entire business of selling trademarked keywords is shady. It is transparently trading on someone else's mark - that was created, developed and maintained by someone else. Even if you aren't misrepresenting yourself (which you patently are) you are still paying to use someone else's mark to gain recognition. If I search for "AMD" and get a link to "Intel.com" as the first ad result that's abuse. Is it actionable? I don't know but unquestionable Intel is preying upon AMD's brand recognition. It's not that Intel is trading under the brand, it's that they are paying to be associated with it - and not to AMD. (In this example).

What's baffling is Google's complicity. In a situation where a company must outbid its competitors for keyword results, the only winner is Google. They facilitate the trademark abuse, and they should be held responsible for that.

What you say is true, but what about AMD referring to Intel in their advertising? Should that still be allowed? To create a more extreme case: if we replace AMD, with Gigablast, and Intel with Google -- should it be legal for Gigablast to use Google's trademark in their advertising? Gigablast would obviously be benefiting from using Google's mark to gain recognition. This is done all the time in print/TV/radio ads.

Interflora had sued Marks & Spencer after Google searches for Interflora began turning up ads for Marks & Spencer, which Interflora argues is confusing to consumers and ultimately leads to lost business.

is different than this:

Quote:

Put more simply, if the ad makes it difficult for a regular person to figure out who's selling the advertised service, it should be prohibited.

unless a "regular person" is defined as stupid.

You search for Interflora, and an ad for Marks & Spencer's flower service shows up. M&S are not hiding the fact of who they are, nor are they trying to infer that they are Interflora.

My experience has been that most "regular people" are stupid, but so long as ads are clearly marked as ads, I see no obligation for anything other than stopping Noke Athletics Gear from buying ad space for a Nike search. Adidas coming up is fine by me, and not allowing Adidas to buy that ad space seems anti-competitive to me.

What I find odd, is that AdWords is completely a part or construct of Google's search engine process. They created it, it's their business environment. How then, does the EU find the basis to exert regulatory controls over an internal business' process? If Google decides tomorrow, they're getting rid of AdWords, or change how that logic works, won't that simply make any legal requirements irrelevant?

Just because you create something does not mean you don't have responsibilities when it comes to selling that product. You do have to abide by the laws of the land you are selling it in. Corporations ride roughsod enough over our rights without people advocating they have even more power just because they created something.

So basically what this means is that it’s illegal for a small business to say something along the lines of “We’re like company x, except……….”

No, it means that the following is illegal.Company X impersonating Company Y by using company Y trademarks

Thus

Company x saying"We x can provide you with cheap y"

is ok

but Company x saying"Come to us for cheap y"Would be illegal.

I don’t think that’s correct. The article didn’t say that flower company a was pretending to be flower company b. All it did was use flower company b as one of it’s keywords for google ads (when you sign up for google ads you choose multiple keywords that you would like your ad to be associated with, then when people search for those keywords your ad could potentially be shown on the side). The ad itself didn’t claim that they were flower company b, they merely used it as a keyword so that when people searched for flower company b their ad would be displayed.

I think it's a good idea to enforce a trademark owners right when it comes to counterfeit goods and services. However, if they begin to encroach on a company's ability to advertise alongside their competitors, that I would take umbrage with.

I see nothing wrong with an advertisement for Nautica or any other brand when I'm searching for Louis Vuitton, and only someone who is unfamiliar with a modern search engine would have any difficulty identifying an ad from the results. Even then, it is fairly clearly identified as to what is an advertisement vs. an organic result. Enforce the idea that an ad should be clearly identifiable as an ad, don't encroach on the right to advertise on trademarked terms.

My experience has been that most "regular people" are stupid, but so long as ads are clearly marked as ads, I see no obligation for anything other than stopping Noke Athletics Gear from buying ad space for a Nike search. Adidas coming up is fine by me, and not allowing Adidas to buy that ad space seems anti-competitive to me.

Google didn't always mark what was paid ads, but they do now. And I don't see what the problem is then.

You search for Interflora, and Interflora likely comes up as the first normal link (I can't check since Google knows I am in Denmark, I only get Interflora, no Mark&Spencer).

For me as a consumer I think this is great, maybe Interflora was the only name I could think of when I wanted to buy flowers, that Google offers other alternatives, even when paid for, that's just great.

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The AMD/Intel example, if I search for a specific Xeon model, and I get to see an AMD paid ad for a comparable Opteron, great.

My experience has been that most "regular people" are stupid, but so long as ads are clearly marked as ads, I see no obligation for anything other than stopping Noke Athletics Gear from buying ad space for a Nike search. Adidas coming up is fine by me, and not allowing Adidas to buy that ad space seems anti-competitive to me.

Google didn't always mark what was paid ads, but they do now. And I don't see what the problem is then.

You search for Interflora, and Interflora likely comes up as the first normal link (I can't check since Google knows I am in Denmark, I only get Interflora, no Mark&Spencer).

For me as a consumer I think this is great, maybe Interflora was the only name I could think of when I wanted to buy flowers, that Google offers other alternatives, even when paid for, that's just great.

---

The AMD/Intel example, if I search for a specific Xeon model, and I get to see an AMD paid ad for a comparable Opteron, great.

I in no way see how this can harm consumers.

It's not always about "not harming consumers." The fact that A can use B's trademark is wrong. If you, Hinton sell a product X, and then I (a competitor in your field) go around telling people that I am Hinton, that first of all misrepresents me - but it also steals the name recognition you've built as Hinton - through marketing, through advertising, and ultimately through the quality of your products. I'm stealing your trademark. It's illegal. It should be illegal. It fits within the current framework of the law: this is the reason Google opposes use of the word "google' as a verb; because their trademark can be diluted to the point that it can't be owned due to commonality of usage, and they will lose the mark. If a mark becomes too narrow, it's useless. If it becomes too broad, you can't trademark it (legally) and shouldn't be able to because the language can't be owned. You can protect your own name, but you can't protect a word.

As long as trademarks are rational (and generally speaking, they are) then the same coverage that applies to them in marketing and advertising should apply to them in Adwords.

The real crooks, as I pointed out, are Google. Imagine AMD having to outbid Intel for control of the Adword "AMD." And don't for one second deceive yourself into thinking Intel wouldn't do it, and Google wouldn't take their money.

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What if I search for "fake Rolex", wouldn't it be double standards if a paid ad for real Rolex watches came up?

I don’t think that’s correct. The article didn’t say that flower company a was pretending to be flower company b. All it did was use flower company b as one of it’s keywords for google ads (when you sign up for google ads you choose multiple keywords that you would like your ad to be associated with, then when people search for those keywords your ad could potentially be shown on the side). The ad itself didn’t claim that they were flower company b, they merely used it as a keyword so that when people searched for flower company b their ad would be displayed.

I think part of the problem in this specific instance is that Interflora is a bit of an odd 'brand'.

Interflora don't run any florists of their own - when you want to Interflora flowers [pre-Internet], you go to your local florist who are part of the Interflora scheme, and then Interflora faxes your order off to the florist nearest the person you're sending the flowers to that's part of the Interflora scheme.

So if you search for Interflora, and up pop Marks & Sparks flower delivery service, it would not be unreasonable for the average punter to think "oh, that's cool, M&S florists must be part of the Interflora scheme - I can Interflora my flowers from their website."

It's not really like searching for Nike and getting an advert for Adidas, in that respect.

It damn well is. The purpose of trademark is to enable consumers to trust that a product sold under a particular brand meets the standards of quality, service, or whatever else that the brand represents. That's why the standards for trademark enforcement are centered around the notion of 'consumer confusion'. If consumers won't be confused by some representation, it simply should not present a trademark issue.

I'm submitting a legal brief that in all advertisements on the Internet it is difficult to understand who's selling what. I mean, even if it says Coke by Jesus, do I really know it's Coke? And that it's really Jesus? It could be a dog with powdered sugar.

In US maybe, in Europe(where this is happening) that is not the case. In most European countries you can't just say "Our X product is better than Y", you end up with ads saying "Our X product is better than the other leading product(s)"

So Bing can purchase "google" as an AdWord. No problem there, right? Didn't think so.

I am pretty sure that they would have to outbid Google for that one. And when they do they'll have to file for bankruptcy...Btw, this is what Google returns as a result for "search" term:1. Yahoo! Search - Web Searchsearch.yahoo.com/2. Metasearch Search Engine - Search.comwww.search.com/3. Google Code Searchwww.google.com/codesearch4. Bingwww.bing.com/

So far, however, courts in both Europe and the US have avoided holding Google itself liable for AdWord trademark abuse. Last year, the European Court of Justice ruled that the sale of trademarked keywords should be left open to third parties. That ruling came in response to a lawsuit filed by Louis Vuitton arguing that Google didn't have the right to sell Louis Vuitton keywords to others. Just a month later, a US district judge issued a similar ruling, finding that Google was not infringing on Rosetta Stone's trademark by selling its keywords to third parties.

So it is legal to sell trademarked content but NOT legal to buy it and use it ? Sounds logiacl to me. [/sarcasm]

Quote:

“We also believe that consumers are smart and are not confused when they see a variety of ads displayed in response to their search queries," Google told the New York Times.

Completely shocked that a large corporation has not in fact dummied their audience down to stupid idiots that can't think for themsleves. Wow - it's refreshing.

Completely shocked that a large corporation has not in fact dummied their audience down to stupid idiots that can't think for themsleves. Wow - it's refreshing.

I'd like to think people are generally reasonable and intelligent, but years of observation have shown a trend that once people sit down in front of a computer, they switch off all rational processing.

I teach some design classes, both basic and advanced, as part of my design firm, and I've seen some WEIRD thought processes.Like explaining for the 100th time that if you save a file, it's usually a good idea to know where you saved it. I seriously have students who save a file, and then have NO idea where they put it. The save dialogue comes up, they click OK and then ask me where it is, like the computer just puts stuff in a random location.

I also regularly experience people being completely wowed by trivial stuff in InDesign - granted you can do some cool stuff with nested styles and Data Import, but it's all fairly simple when you look at the logic required.Then I get the same people wondering why the computer can automatically convert a PSD (a picture essentially) to a fully functional webpage, like this should be a trifling matter.

So I think the assumption that people sit in front of a computer and act like reasonable people isn't necessarily founded in fact.

This situation goes way beyond the electronic world. For instance, in my town we had a hardware store named McDonalds that had been around for generations. When the fast food franchise decided to open their first store in the area, they successfully sued the hardware store for infringement and forced the McDonald family to change the name of their hardware store. As if people around here couldn't tell the difference???

The entire business of selling trademarked keywords is shady. It is transparently trading on someone else's mark - that was created, developed and maintained by someone else. Even if you aren't misrepresenting yourself (which you patently are) you are still paying to use someone else's mark to gain recognition. If I search for "AMD" and get a link to "Intel.com" as the first ad result that's abuse. Is it actionable? I don't know but unquestionable Intel is preying upon AMD's brand recognition. It's not that Intel is trading under the brand, it's that they are paying to be associated with it - and not to AMD. (In this example).

What's baffling is Google's complicity. In a situation where a company must outbid its competitors for keyword results, the only winner is Google. They facilitate the trademark abuse, and they should be held responsible for that.

I agree completely. I would argue that simply using a trademarked term without permission to facilitate redirection to the NON-trademark owner is a violation of trademark copyright.

Using the search term "McDonalds" and associating it with a Burger King ad, for example, is relatively equivalent to saying "McDonalds" during a TV commercial, or using the Golden Arches in a BK ad. It's a blatant trademark violation.

Google has once again circumvented the courts and taken the law into it's own hands, and it should be harshly prosecuted for doing so. You want open-source, Google? Cool. But keep it to things that ARE open. Don't try to force trademark and copyright to be open. I admit, we need copyright reform, but Google could hardly argue this is anything other than a shady business practice based in greed.

That said, these idiots that spend all day arguing about ads (like the whole ad debacle with iOS) don't seem to understand: WE DO EVERYTHING WE CAN AS WEB SURFERS TO ***AVOID*** ADS. It doesn't matter HOW you serve them to us.